Inter Partes Proceedings

As indicated above, shortly before registration, a trademark application is “published for opposition,” which allows third party competitors who believe they would be damaged by the issuance of the registration (for example, any member of the public which believes it has pre-existing trademark rights which conflict with those specified in the application) to file an opposition proceeding to “oppose” the issuance of the application as a registered trademark.  If no opposition is timely instituted, then, in due course, a notice of allowance results and the application issues as a registered trademark.

After the registration issues, third parties may also file a cancellation proceeding asserting the same kinds of grounds available at the opposition stage (e.g., “My company actually began using the trademark in commerce in the United States before the registrant.”). However, these third parties are only allowed five (5) years in which to assert the full array of statutory grounds for cancellation of the trademark; after the five-year anniversary of the registration, the grounds available for cancellation are drastically reduced and the trademark is deemed “incontestable.”